UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
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`
`
`
`NFL ENTERPRISES LLC,
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`Case No.: IPR2017-02092
`Patent No. 6,233,736
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`
`
`
`
`NFL ENTERPRISES LLC,
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`Case No.: IPR2017-02092
`Patent No. 6,233,736
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. THE BOARD SHOULD DENY THE EISEN/RHOADS GROUND BECAUSE
`THE PETITION’S PROPOSED MODIFICATION OF EISEN BASED ON
`RHOADS IS INCONSISTENT WITH HOW THE PETITION MAPPED EISEN
`TO THE CLAIMS. .................................................................................................... 2
`A. Claims 1-3 ......................................................................................................... 2
`B. Claim 8 ............................................................................................................. 8
`III. THE BOARD SHOULD DENY THE THROCKMORTON/RHOADS
`GROUND BECAUSE THE PETITION FAILS TO IDENTIFY THE
`DIFFERENCES BETWEEN THE CLAIMED SUBJECT MATTER AND THE
`PRIOR ART. ............................................................................................................ 10
`IV. THE BOARD SHOULD DENY THE THROCKMORTON GROUND
`BASED ON THROCKMORTON ALONE BECAUSE THE PETITION TRIES TO
`REASSERT WHAT WAS ALREADY CONSIDERED DURING
`PROSECUTION BY USING HINDSIGHT TO FILL GAPS IN THE
`REFERENCES. ........................................................................................................ 11
`A. The ’736 patent discloses displaying an object in video playback that
`provides an automatic and direct link to online information in response to a user
`command. .............................................................................................................. 14
`A. Unlike the ’736 patent, Throckmorton does not disclose displaying an object
`in video playback that provides an automatic and direct link to online
`information in response to a user command. ........................................................ 15
`V. CONCLUSION .................................................................................................. 18
`
`
`
`i
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`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION
`
`The petition challenges claims 1-3 and 8 of the ’736 patent based on the
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`combination of Eisen and Rhoads under 35 U.S.C. § 103, and based on either
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`Throckmorton alone or in combination with Rhoads under 35 U.S.C. § 103. Pet. 4.
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`Of these claims, only 1 and 8 are independent. Because the petition’s grounds do
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`not include a proper Graham analysis for the independent claims, the petition fails
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`to establish a reasonable likelihood that the NFL will prevail on any of its grounds.
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`See 35 U.S.C. § 314(a).
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`For the Eisen/Rhoads ground, the petition lacks the details necessary to
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`make out a prima facie case of obviousness for three reasons. First, the petition
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`does not address why a person of ordinary skill would have looked to Rhoads to
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`solve a problem not present in Eisen. Second, the petition fails to explain how the
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`steganographic program in Rhoads could have been added into the system in Eisen.
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`Third, the petition fails to identify what gap in Eisen the NFL intends to fill with
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`Rhoads for claim 8.
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`For the Throckmorton/Rhoads ground, the petition similarly fails to explain
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`what gap in Throckmorton the NFL intends to fill with Rhoads for all claims.
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`Finally, for the Throckmorton ground without Rhoads, the petition improperly uses
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`the disclosure of the ’736 patent, rather than the disclosure of the reference, as its
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`roadmap. Accordingly, the Board should deny all of the NFL’s grounds. Id.
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`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
`II. THE BOARD SHOULD DENY THE EISEN/RHOADS GROUND
`BECAUSE THE PETITION’S PROPOSED MODIFICATION OF
`EISEN BASED ON RHOADS IS INCONSISTENT WITH HOW THE
`PETITION MAPPED EISEN TO THE CLAIMS.
`A. Claims 1-3
`The petition’s combination of Eisen and Rhoads fails to address claim 1 as a
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`whole. Independent claim 1 (with emphasis added) recites:
`
`1. A method of providing to a user of online information
`services automatic and direct access to online information
`through an address associated with an online information
`source provided with a video program comprising:
`
`indicating to the user that an address has been provided with
`said video program; and
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`electronically extracting said address and automatically
`establishing, in response to a user initiated command, a direct
`communication link with the online information source
`associated with said address so that the user has direct access
`to the online information.
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`The petition relies on Eisen to disclose the majority of the claim and,
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`through its expert declaration, appears to map the claimed “address” to Eisen’s
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`page field entered when creating a footnote:
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`280. Eisen discloses an address associated with an online
`information source provided with a video program.
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`281. See, e.g., Eisen discloses using a multi-media reference
`for the footnote material:
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`Patent Owner’s Preliminary Response
`The create footnote window 80 may contain such
`information, for example, as the duration the
`footnote is to be available, when the footnote will
`appear, and multi-media reference information
`such as document name, author, page, and, etc.
`NFLE 1005 3:56-61.
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`282. Figure 4 shows the screen in which the multi-media
`reference information is entered:
`
`
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`Pet. 40 (citing Ex. 1006, ¶¶ 276-288).
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`The petition, however, admits that Eisen fails to disclose “electronically
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`extracting said address.” Pet. 42-43. Instead of relying on Eisen for this element,
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`the petition thus relies on the steganographic programs in Rhoads. Id. The petition
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`explains that “Rhoads teaches the use of steganographic programs, which ‘allow
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`computer users to hide their own messages inside digital image files and digital
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`audio files,’” Pet. 19 (quoting Ex. 1004, 3:25-27), and that “the result is a data
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`object that ‘effectively comprise[s] a graphical object’ and the ‘URL address’ at
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`the same time.” Pet. 20 (quoting Ex. 1004, 2:9-11). The complex process of using
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`steganography to embed a link in a digital image is shown in figure 2 of Rhoads,
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`which is reproduced below:
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`
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`But the combination of the footnote program in Eisen with the
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`steganographic programs in Rhoads fails to render the claims obvious for two
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`reasons. First, the petition does not address why a person of ordinary skill would
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`have looked to Rhoads to solve a problem not present in Eisen. Second, the
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`petition fails to explain how the steganographic programs in Rhoads could have
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`been added into the system in Eisen.
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`Contrary to the petition’s assertion, a person of ordinary skill would not have
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`been motivated to combine Eisen with Rhoads to achieve electronically extracting
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`an address, Pet. 42-43, because Rhoads’s extraction is unnecessary in Eisen.
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`Unlike the alleged address in Rhoads, the alleged address in Eisen is not embedded
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`in anything. Instead, the alleged address in Eisen, namely Eisen’s page field
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`entered when creating a footnote, is included in a table that “must be created
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`during the development stage of the present invention.” Ex. 1004, 3:65-4:2; see
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`also Ex. 1004, Fig. 9, el. 214, 5:24-39 (the table includes the reference material
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`entered by the user in figure 4, which includes the page field the NFL maps to the
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`claimed address). There would thus be no reason for one of ordinary skill to apply
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`the alleged extraction of Rhoads to Eisen.
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`The petition also fails to explain how the steganographic program in Rhoads
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`could have been added into the system on Eisen. In the section of the petition
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`addressing the “electronically extracting said address” element, the petition does
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`not explain how Rhoads and Eisen are being combined, but instead provides only
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`this brief and conclusory analysis:
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`a POSITA would have been motivated to combine Eisen with
`Rhoads to achieve this limitation. NFLE 1006 ¶ 296. Rhoads
`describes a “conventional browser” that is “enhanced to
`include, for example, the capability to analyze encoded bit-
`mapped files and extract the identification code (URL address,
`for example).” NFLE 1004 59:41-47. A POSITA would have
`had a reasonable expectation of success in adding this
`disclosure to the methods and systems of Eisen because its
`application to similar systems (i.e., the linked data objects of
`Rhoads and the linked footnotes of Eisen) would yield
`predictable results. NFLE 1006 ¶ 296.
`
`Pet. 43. While the section of the petition above points to Rhoads’s disclosure of a
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`way to encode an address into a bitmap, the petition does not point to any bit-
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`mapped file in Eisen to which the Rhoads’s encoding is being applied. Id.
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`Accordingly, this section of the petition does not explain how the references are
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`being combined.
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`In the introduction to the ground, the petition suggests that the process in
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`Rhoads could be applied to Eisen’s footnotes:
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`Common sense dictates that the linking method disclosed in
`Rhoads could be applied to Eisen’s footnotes to link a video
`playing on one website to reference material located on
`another website.
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`Pet. 39-30. But that makes no sense because Eisen’s footnotes are not multimedia
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`objects to which the methods in Rhoads could be applied. Instead, as shown below
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`Patent Owner’s Preliminary Response
`in annotated Figure 6, the footnotes are buttons drawn at the appropriate times
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`during playback:
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`
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`Nothing in Rhoads or the petition suggests the steganographic programs in Rhoads
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`could be applied to a button rendered in real time. Instead, “Rhoads teaches the use
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`of steganographic programs, which ‘allow computer users to hide their own
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`messages inside digital image files and digital audio files,’” Pet. 19 (quoting Ex.
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`1004, 3:25-27) (emphasis added). Accordingly, the petition does not explain how
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`the steganographic programs in Rhoads could be applied to the footnotes in Eisen.
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`Because the petition fails to address why or how the combination of Eisen
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`and Rhoads would render independent claim 1 obvious, given the way in which it
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`mapped Eisen to the claims, the petition also fails to establish a reasonable
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`likelihood of success in proving that claim 1 or its dependent claims 2-3 would
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`have been obvious. Accordingly, the Board should deny institution of the
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`Eisen/Rhoads ground for claims 1-3.
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`B. Claim 8
`For claim 8, the petition asserts that it would have been obvious to combine
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`Eisen and Rhoads for the same reasons discussed above for claim 1. But that
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`proposed combination and the reasons for it are flawed for the reasons discussed
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`above.
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`The petition also fails to establish a reasonable likelihood of success for
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`claim 8 because it fails to present a proper Graham analysis for claim 8.
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`Obviousness is resolved on a number of factual determinations “including (1) the
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`scope and content of the prior art, (2) any differences between the claimed subject
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`matter and the prior art, and (3) the level of ordinary skill in the art.” See, e.g., Eizo
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`Corp. v. Barco N.V., IPR2014-00358, Paper 11 at 29 (P.T.A.B. July 23, 2014)
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`(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 406 (2007)). Petitions for inter partes reviews “must
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`address the Graham factors.” Eizo Corp., IPR2014-00358, Paper 11 at 29-30. For
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`example, the Board faulted the petitioner in Eizo Corp. for failing to identify the
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`differences between the claimed subject matter and the prior art. Id. at 29-30. In
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`particular, the Board found insufficient the petitioner’s “conclusory assertion” that
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`“[t]o the extent [the first prior art reference] may not explicitly teach” the
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`limitation, the second prior art reference “explicitly teaches this limitation.” Id. at
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`30. The Board explained that “such an assertion fails to resolve the exact
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`differences sought to be derived from” the second prior art reference. Id. (finding
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`that petitioner had not shown a reasonable likelihood of prevailing on that ground).
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`Numerous other Board decisions have reached the same result. See, e.g., Moses
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`Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6 at 18 (P.T.A.B. June
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`18, 2014) (faulting petitioner for failing to “explain[] any differences between the
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`claimed subject matter and the prior art”); Moses Lake Indus., Inc. v. Enthone, Inc.,
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`IPR2014- 00246, Paper 6 at 17 (P.T.A.B. June 18, 2014) (same); eBay, Inc. v.
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`Paid, Inc., CBM2014-00125, Paper 15 at 21 (P.T.A.B. Sept. 30, 2014) (concluding
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`similarly even where petitioner’s claim charts were “detailed”); See, e.g., LG
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`Elects. v. Cellular Comm. Equip., IPR2016-00197, Paper 7 at 8 (P.T.A.B. April 29,
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`2016) (concluding that “[i]t is … unclear why a person of ordinary skill would turn
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`to [the secondary reference] for the teaching of an element that, according to
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`Petitioner, is already taught by [the primary reference]”).
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`Here, the petition’s mappings for claim 8 are inconsistent with its asserted
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`ground and do not comport with a proper Graham analysis because the petition
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`asserts that all of the claim elements are taught by Eisen, but it does not request
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`institution based on Eisen alone under either anticipation or obviousness. Indeed,
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`the petition’s discussion of Rhoads is limited to the assertion that “[a]dditionally,
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`Rhoads teaches a method for embedding ‘an address link’ that leads to online
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`information in a video such that a user ‘needs merely to point 20 and click’ on the
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`video, and the browser recognizes the video as a ‘hot link’ and routes the user to
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`the ‘linked web site.’” NFLE 1004 58:1-3, 58:30-39.” Pet. 45-46. In this
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`circumstance, institution should be denied because it is unclear from the petition
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`why a person of ordinary skill would look to the secondary reference, Rhoads,
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`when the petition asserts that all elements are taught by the primary reference.
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`Accordingly, because the petition fails to explain why a person of ordinary
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`skill would have looked to Rhoads to modify Eisen, the petition fails to establish a
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`reasonable likelihood of success in proving that claim 8 would have been obvious
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`based on the combination of Eisen and Rhoads.
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`III. THE BOARD SHOULD DENY THE THROCKMORTON/RHOADS
`GROUND BECAUSE THE PETITION FAILS TO IDENTIFY THE
`DIFFERENCES BETWEEN THE CLAIMED SUBJECT MATTER
`AND THE PRIOR ART.
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`As discussed above, the Board denies grounds for failing to conduct a proper
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`Graham analysis when the petition fails to identify the differences between the
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`claimed subject matter and the prior art. Supra at Sect. II.B. For the Throckmorton
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`and Rhoads combination, the petition asserts that its reason for adding Rhoads is
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`because: “In addition, it would have been obvious for a POSITA to combine
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`Throckmorton with Rhoads’s more detailed disclosure of extracting an address and
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`automatically establishing a direct communications link.” Pet. 31-32. This is
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`exactly the type of improper Graham analysis—i.e., one not specifically
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`identifying the gaps in the primary reference intended to be filled— that the Board
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`has declined to institute on in the past. Supra at Sect. II.B. Accordingly, the Board
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`should deny the ground based on the combination of Throckmorton and Rhoads.
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`IV. THE BOARD SHOULD DENY THE THROCKMORTON GROUND
`BASED ON THROCKMORTON ALONE BECAUSE THE PETITION
`TRIES TO REASSERT WHAT WAS ALREADY CONSIDERED
`DURING PROSECUTION BY USING HINDSIGHT TO FILL GAPS
`IN THE REFERENCES.
`In addition to acknowledging the prior Netflix petition from which the
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`petition’s Throckmorton ground builds1, the petition acknowledges that the
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`Examiner considered and applied Throckmorton during original examination of the
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`’736 patent. Pet. 9-10, 12. The petition wrongly asserts that the Board should
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`consider this ground anyway because “the Examiner overlooked an embodiment of
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`Throckmorton in which a user may access the additional information from the
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`video program directly.” Pet. 10. In fact, Throckmorton does not disclose a user
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`accessing additional information directly from the video program. Indeed, the
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`petition’s only basis for why the examiner was wrong uses the ’736 patent’s
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`1 While not mentioned in the petition, Throckmorton was also raised in an
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`additional petition filed by Apple. See IPR2016-00992, Paper 1. (terminated Aug.
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`25, 2016).
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`disclosure in hindsight.2 That is not proper so there is no reasonable likelihood of
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`success. Accordingly, the Board should either deny the ground because the petition
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`fails to meet the standard required by 35 U.S.C. § 314(a), or under 35 U.S.C.
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`325(d) because it was already considered by the examiner.
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`Instead of being based on what the Examiner “overlooked,” the
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`Throckmorton ground is based purely on hindsight. It is a basic concept in any
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`treatise on patent law that “[t]he determination of obviousness must be done based
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`on the knowledge possessed by one of ordinary skill in the art at the time when the
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`invention was made.” See, e.g., Robert A. Matthews, Jr., Annotated Patent Digest
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`§ 18:20 (Dec. 2017). “Thus, it is not permissible to use hindsight after viewing the
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`claimed invention to determine questions of obviousness or to rely at all on the
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`teachings of the claimed invention in determining whether one of ordinary skill in
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`the art would find the invention obvious.” Id. Indeed, the Federal Circuit rejects
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`obviousness challenges where the challenger “simply retraced the path of the
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`2 The petition also points to the later ’482 Application, Pet. 10-11, but fails to
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`address the differences between the claims. The claims in the ’482 Application did
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`not have the same combination of indicating with automatic and direct access that
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`are recited in the claims here and that formed the original examiner’s basis for
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`allowing the claims. Compare Ex. 1009, p. 8 with EX. 1002, 116, 122.
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`inventor with hindsight.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
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`F.3d 1358, 1364 (Fed. Cir. 2008).
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`Here, the petition impermissibly retraces the path of the ’736 patent instead
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`of being guided by the prior art. For example, the petition relies upon the following
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`assertions about what could have been done for motivations that are disclosed in
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`the ’736 patent but not in Throckmorton:
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` “[A] POSITA would have understood that the clickable indicator could
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`be displayed on the same screen as a corresponding video program, or on
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`a different screen. NFLE 1006 ¶¶ 159-64.” Pet. 26 (emphasis added).
`
` “A POSITA would have understood that the menu could be displayed on
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`the same screen as a corresponding video program, or on a different
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`screen. NFLE 1006 ¶¶ 159-64.” Pet. 27 (emphasis added).
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` “Based on Throckmorton’s teaching that associated data may be a pointer
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`or reference such as a clickable URL, a POSITA would understand that a
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`clickable URL could be visibly displayed, i.e., indicated, to a user at a
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`specific timepoint in a video. See NFLE 1006 ¶¶ 165-66.” Pet. 27
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`(emphasis added).
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`As explained below, nothing in the Throckmorton, however, actually
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`discloses providing a clickable object in video playback that provides an automatic
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`and direct link to online information. Instead, that disclosure is only found in the
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`’736 patent.
`
`A. The ’736 patent discloses displaying an object in video playback that
`provides an automatic and direct link to online information in response
`to a user command.
`
`The ’736 patent discloses its invention as having two goals. The first goal is
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`to provide direct access to online information from a video.
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`relate[ing] to an electronic information access system and
`more specifically to a media online services access system
`which provides direct, automated access to an online
`information provider through an address embedded in an
`electronic signal which carries a program segment (e.g.,
`through television, radio, or a pre-recorded video or audio
`medium).
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`Ex. 1001, 1:6-12. The second goal is to provide an indicator to the user when the
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`link to the online information is available—“a further object of the invention [is] to
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`provide a system which indicates to the program user (i.e., viewer or listener), after
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`extracting an online information provider address, that more information is
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`available.” Id. at 3:5-8.
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`The Patent also explains that the indicator can be a video image 20 (e.g.,
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`picture within picture, logo, or icon) to be displayed with the video program signal
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`on reproducing system 22.
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`Ex. 1001, Fig. 1. The user can be taken directly to the online information by
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`issuing a command when the indicator is present. Ex. 1001, Abstract.
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`A. Unlike the ’736 patent, Throckmorton does not disclose displaying
`an object in video playback that provides an automatic and direct
`link to online information in response to a user command.
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`Despite the petition’s assertions discussed above, Throckmorton does not
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`disclose displaying a clickable object in video playback that provides an automatic
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`and direct link to online information. Throckmorton discloses two embodiments. In
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`the automatic display in “realtime” embodiment, “[r]ealtime trigger 76 accepts
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`commands sent as part of the associated data to display a page of information
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`without the user asking for it. The output of realtime trigger is a command sent
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`over data path 87 to human interface 88 which causes the page of information to
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`be displayed.” Ex. 1003, 7:21-26 (emphasis added). In the “browsing”
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`embodiment, “[t]he human interface [88] . . . allow[s] the consumer to browse
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`through the associated data. This might start with a menu of available information
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`from which the consumer could select just as if the data were coming from an
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`online service.” Id. 8:9-11 (emphasis added). In the “browsing” embodiment, the
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`menu items can be clickable URLs that point to web pages. Id. 9:1-14. But neither
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`the “realtime” embodiment nor the “browsing” embodiment provides URL links
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`on a screen at particular times.
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`Instead, Throckmorton discloses displaying supplemental content in a
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`separate interface. Indeed, in both embodiments of Throckmorton, rather than
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`displaying an object in video as the petition asserts, such data is displayed on
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`human interface 88, which Throckmorton discloses as being a “Web Browser,”
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`Id. 7:35-45, but the primary data—“live or pre-recorded information that is created
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`by the broadcasting and entertainment industries for the purpose of 40 delivery to
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`consumers over delivery mediums such as broadcast television, video cassettes,
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`radio and audio CD,” Id. 3:36-42,—is output by a “Primary data rendering sub-
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`system 54 [that] performs the function of presenting the primary data stream to the
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`consumer in the manner in which a typical consumer would expect to see the data
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`presented,” Id. 6:36-38. This separation of the content display is further shown in
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`annotated figure 3, below:
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`Associated Data
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`Video
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`Thus, because the petition only arrives at the claims by using the ’736 patent
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`as a roadmap, the ground is impermissibly based on hindsight. Accordingly, the
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`petition fails to establish a reasonable likelihood that the NFL will prevail and
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`institution of this ground should be denied. See 35 U.S.C. § 314(a). Moreover,
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`because the petition does not show anything the Examiner “overlooked” but
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`instead uses hindsight to fill the gap identified by the Examiner, the Board should
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`deny the Throckmorton ground under 35 U.S.C. 325(d). Allowing the NFL to
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`move forward with this third petition on Throckmorton where it seeks to take
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`advantage of how OpenTV, the examiner, and the Board previously handled the
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`reference would be highly prejudicial to OpenTV. See General Plastic Industrial
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`Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6,
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`2017) (precedential).
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`V. CONCLUSION
`For the foregoing reasons, the Board should deny the NFL’s petition.
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`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
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`Dated: December 22, 2017
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg,
`Lead Counsel
`Registration No. 59,369
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`Counsel for OpenTV
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`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), I, Joshua L. Goldberg, certify that
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`PATENT OWNER’S PRELIMINARY RESPONSE contains 3,467 words,
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`excluding those portions identified in 37 C.F.R. § 42.24(a), as measured by the
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`word-processing system used to prepare this paper.
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`Dated: December 22, 2017
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg,
`Lead Counsel
`Registration No. 59,369
`
`Counsel for OpenTV
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` 19
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`Case No.: IPR2017-02092
`Patent Owner’s Preliminary Response
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S PRELIMINARY RESPONSE was served on December 22, 2017 via
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`email directed to counsel of record for the Petitioner at the following:
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`Petitioner consents to electronic service.
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`Dated: December 22, 2017
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`Stephen C. Stout, Lead Counsel
`sstout@velaw.com
`NFLE-IPR@velaw.com
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`Hilary L. Preston, Back-up Counsel
`Rachel P. McClure, Back-up Counsel
`hpreston@velaw.com
`rmcclure@velaw.com
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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